Basic Information about Japanese Trademark Applications
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Filing a New Trademark Application
Applicants need to submit an application form to the JPO. The application form includes the applicant’s name and address, the wording or figurative representation of the trademark to be registered, the designated goods or services, and the class of goods or services.
In addition to conventional marks such as word marks and logo marks, 3D-shape marks, motion marks, hologram marks, color marks, sound marks, or position marks can also be protected as eligible trademarks under the Trademark Law.
Designated goods are classified into Classes 1 to 34, and designated services are classified into Classes 35 to 45. For example, downloadable software is classified as Class 9, while providing non-downloadable software is classified as Class 42.
As the number of classes increases, the official fees for filing and registration increase.
According to the Status Report 2022 issued by the JPO, a first action (FA) pendency for accelerated examination is 2.1 months, and the FA pendency for normal examination is 10.0 months. The FA pendency means the average number of months from the filing date to the dispatch date of the first examination result (a first office action or notice of allowance).
The unexamined application is published approximately 3-4 weeks after filing.
When an applicant receives an office action indicating reasons for refusal from the JPO, they are given an opportunity to submit a written opinion and/or amendment within 3 months (40 days for domestic clients) from the receipt date of the office action. The response due date may be extended up to 1 month. Failure to respond to the office action will result in a decision of rejection.
For example, if a trademark is similar to a previously registered trademark owned by another person and some of the designated goods or services associated with the trademark are identical or similar to the goods or services associated with the previously registered trademark, the trademark application will be rejected based on the existence of the previously registered trademark.
In this case, an Applicant may consider arguing that the trademark is not similar to the previously registered trademark based on the three criteria of appearance, pronunciation, and conception. The applicant may also consider deleting some of the designated goods or services that are identical or similar to the goods or services associated with the previously registered trademark.
If an examiner indicates that the trademark lacks distinctiveness, an Applicant may consider arguing that the trademark is distinctive or that the trademark has obtained distinctiveness as a result of its use.
Decision of Rejection
An examiner’s decision of rejection is issued when the reasons for refusal remain unresolved after a response to the office action with arguments and/or amendments. In response to the decision of rejection, Applicants may file an appeal against the decision.
A request for appeal must be filed within three months after the receipt date of the decision. No extension of the due date is allowed.
Furthermore, a power of attorney (no signature required) is required for filing a request for appeal against the decision. Applicants may also apply for a request to accelerate the appeal. The appeal decision for the accelerated appeal was made in about 2.6 months on average in 2021.
Appeal proceedings are conducted by the panel of appeal examiners.
When Applicants receive an appeal decision of registration, the trademark right is registered through the payment of registration fees.
On the other hand, when Applicants receive an appeal decision of rejection, they are given an opportunity to challenge the illegality of the appeal decision by filing a lawsuit for cancellation of the appeal decision with the Intellectual Property (IP) High Court (located at the Business Court in Nakameguro). The statutory deadline for filing the lawsuit is 120 days from the receipt date of the appeal decision (30 days from the receipt day for domestic clients).
Notice of Allowance
If a trademark application is allowed, the trademark right will be registered through the payment of the registration fees. The registration fees must be paid within 30 days from the receipt date of the notice of allowance. The registration fees can be paid in installments for the first half and second half terms.
The trademark gazette is then published.
The trademark right is effective for 10 years from the registration date.
The duration of the trademark may be renewed by filing an application for renewal registration. The application for renewal registration must be filed during 6 month windows prior to the expiration of the trademark right. Thus, a trademark right can be made semi-permanent through the renewal registration.
Any person may file an opposition to a registered trademark within two months after the publication date of the registered trademark. The opposition proceedings are held by the panel of trial examiners.
If the panel determines that the registered trademark should be cancelled for one or more reasons, an office action indicating reasons for cancellation will be sent to the trademark owner.
The trademark owner may submit arguments in response to the office action. The due date for responding to the office action is set to 3 months from the receipt date of the office action for international clients, and 40 days from the receipt day for domestic clients.
It should be noted that in an invalidation trial that is similar to the opposition system, only interested parties can file a request for invalidation trial.
For more information on the latest trends in IPR filings in Japan, please refer to this article.
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